the enforcement of geographical indications...o gi as «sui generis» ip rights o eu/national...
TRANSCRIPT
Massimo Antonelli
European Observatory on infringements of IPR
Alicante – 30.10.2018
The enforcement of Geographical Indications
1 Economic impact of fake GIs in the EU
2 The EU rules to protect GIs
3 The national enforcement of GIs
4 Border protection of GIs and the role of Customs
5 Enforcement of GIs and exchange of information
1 ECONOMIC IMPACT OF FAKE GIs IN THE EU
GI Registered
PDO 1781
PGI 1167
TSG 59
GI SPIRITS 338
total 3345
Source: QUALIGEO.EU, the food, wine and spirits GI database https://www.qualigeo.eu
«INFRINGEMENTS OF GEOGRAPHICAL INDICATIONS»
Value of GI infringing products (2014) VALUE
(€billion) % OF GI PRODUCT
MARKET
4.3 9.0%
Data from 17 MS representing approximately 82% of the EU GI product market
«INFRINGEMENTS OF GEOGRAPHICAL INDICATIONS»
Infringement rates vary considerably by GI product
«INFRINGEMENTS OF GEOGRAPHICAL INDICATIONS»
impact on spirits and wines sector 2012-2015
DIRECT LOST SALES
(€billion)
% OF SALES
TOTAL LOST SALES
(€billion)
DIRECT EMPLOYM
ENT LOSS
TOTAL EMPLOYM
ENT LOSS
GOV. REVENUE
LOSS (€billion)
2.7 6.9% 6.3 7,100 41,000 2.2
2 THE EU RULES TO PROTECT GIs
• Approach to protection o GI as «sui generis» IP rights o EU/national collective marks or national certification/guarantee
marks o under other legal framework (e.g.: competition laws, consumers
protection, etc.)
common framework
national implementation
• 2 level organisation
controls implementation &
reporting
• Protected products: foodstuff and agricultural, wines, spirits and aromatised wine drinks
• EU products and GI protected products from third Countries o upon registration in the EU – special scheme provided o based on bilateral/multilateral agreements
• Scope of the protection
o any direct or indirect commercial use of the registered name o any misuse, imitation or evocation o any other false or misleading indication as to the origin,
provenance, nature or essential qualities o any other practice liable to mislead the consumer as to the origin
of the product
• Scope of the protection
o «Ex officio» measures: a qualifying tool
Member States shall take appropriate administrative and judicial steps to prevent or stop the unlawful use of the name of products that are produced or marketed in the State
- open category of measures - independently of prior claims - support to small producers - for all GI products across the EU
• controllers National central authority
designated competent authorities (CA) - impartial and objective - qualified staff - necessary resources
delegated control bodies (CB)
- usually private entities - operating as certification bodies - ISO/IEC 17065:2012 - only on production
• Control bodies – Spanish practice: the Consejos Reguladores
Example in Aragon (Law No 9/2006):
o Public corporation with autonomous legal status and finance o Tasks
o administration o proposal of minimum requirements for each associated
producer o can act as control body (ISO/IEC 17065:2012 compliant):
- via a control structure integrated in the Consejo - the Consejo itself upon authorisation of the Community o under the Community’s supervision (incompliances and control
of legality of acts)
• Control bodies – Italian practice: the Consorzio di produzione
Administrative entity created by the producers – legal framework in the civil code
o common organisation of enterprises o composition:
- representation - rules against conflicts of interest
o tasks include special surveillance on the market through the “agenti vigilatori”
- production-transformation-trade, at all levels - can act as “public security agents” - directly supporting the national control authority – ex officio
protection
• Official controls
o it’s a voluntary system of control on all operators in the group of producers
o compulsory for all operators once they use the name o based on a national plan of controls shared with the Commission
• Official controls
PRODUCTION MARKET
o Technical compliance with product specifications
o usually upon a plan agreed with the g.o.p.
o costs
o Surveillance of the use of the name
o risk analysis based/systematic o in the whole supply chain
Methodology: sampling
analytic and/or organoleptic tests
3 THE NATIONAL ENFORCEMENT OF GIs
• A good enforcement largely depends on an equivalent level of protection ensured across all the territory of the Union
Different approaches in MSs to high quality food products for historical and traditional reasons
Different economic weight of GI in MSs
Need to monitor…
The scope: 4 product categories IP: strictly GI in the TRIPP definition infringements
The structure: Inventory of organisations and procedures Practical Guide: contact data for networking and information
on legal redresses
The methodology: data collection from Member States open sources and field research
• 2017: EUIPO’s Study on national enforcement
• 2017: EUIPO’s Study on national enforcement National systems are diverse Procedures and resources not always specifically for GI
- general food controls apply
Criminal Law o majority with specific GI criminal provisions o other covered by IP crime law
Civil law remedies o trade mark law o unfair competition o consumer protection
• 2017: EUIPO’s Study on national enforcement «Ex officio» protection, a weak point …but some have very good practices
o Italy, France, Germany, Spain, Latvia, Croatia, Poland, Romania, Hungary bigger respondents
o Italy best practices: - central c.a. ICQRF legally designated for ex officio measures - MoUs with e-commerce platforms eBay, Alibaba and Amazon – take down of listing – very quick reply after request
• 2017: EUIPO’s Study on national enforcement
What is the real involvement of law enforcement authorities (Police and Customs) on GIs?
Customs: is there a sufficient protection at the borders?
4 BORDER PROTECTION OF GIs AND ROLE OF CUSTOMS
Fake food products in international trade is a reality
Source: DG TAXUD Report on EU customs enforcement of IPR – results at the EU border 2017
26 January 2017: The Italian Prosecutor Office of Reggio Calabria
(Anti-Mafia District Directorate) announces an operation
(including collaboration of Italian Customs)against Organized
Criminal Group with basis in Italy and connections with the USA
Money laundering Drug trafficking
Agri-food counterfeiting
The criminal activities included illegal import-export operations
of olive oil and agricultural products:
- influencing the regional agri-food production
- establishing a network for export to USA of counterfeited olive
oil
- US commercial and retail network infiltrated with illegal
Italian olive oil products
- and much more…
46 million euro seized at the time of the operation
EU Customs role in IPR enforcement IPR holders proactive role: an «application for action» needed with all info IP rights in % of articles seized in 2017: 0,04% of GI
Source: DG TAXUD Report on EU customs enforcement of IPR – results at the EU border 2017
5 ENFORCEMENT OF GIs AND EXCHANGE OF INFORMATION
• Information provided by the IPR holder is key: o product description – authentic and fake o IP information o legal supply chain o black list of infringers o contact data of the company
«application for action»
AUTHENTIC GOODS INFRINGING GOODS
• For information exchange the Observatory has developed EDB for Customs and Police (i.e., borders and market controls)
Product information
Company information
Electronic application for action
THANK YOU
@IPKey_EU